One of our clients, a Fortune 500 equipment manufacturing company, regularly conducts engineering design review sessions that include Patterson + Sheridan attorneys. The client includes us in these sessions to utilize not only our expertise in patent law, but also to increase our understanding of the client’s portfolio as well as the client’s relevant competitors. During the sessions, we capture many concepts that may include patentable subject matter based on our knowledge of the existing art. Additionally, we ask probing questions of the engineers to identify key, distinguishing features that are of potential patentable interest. Based on the discussion from the sessions, we then present to the client multiple patentable concepts with a perspective on how these concepts fit into a larger patent strategy, e.g., alignment with the client’s products and services, as blocking patents, etc. In some cases, the concepts are broadly disclosed in previously filed applications. Therefore, we propose amended, and in some cases divisional, claims to the client. In other cases, we recommend filing new applications.

Our participation results in filing multiple patent applications covering the ideas generated in the brainstorming session. We are able to save money for the client and take advantage of earlier filing dates to block competitors using previously filed applications.